OPPOSITION Nо B 3 050 768

 

DM-Drogerie Markt GmbH + Co. KG, Am dm-Platz 1, 76227 Karlsruhe, Germany (opponent), represented by Lemcke, Brommer & Partner Patentanwälte Partnerschaft mbB, Siegfried-Kühn-Straße 4, 76135 Karlsruhe, Germany (professional representative) 

 

a g a i n s t

 

De Meeuw Oirschot B.V., Industrieweg 8, 5688 DP Oirschot, Netherlands (applicant), represented by  AKD N.V., Wilhelminakade 1, 3072 AP Rotterdam, The  Netherlands (professional representative).

On 28/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 050 768 is upheld for all the contested goods and services:

 

2.	European Union trade mark application No 17 694 118 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 25/04/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 694 118 (figurative mark). The opposition is based on European Union trade mark registration No 11 654 456, ‘dm’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

 

 

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

 

a) The goods and services

 

The services on which the opposition is based are the following:

 

Class 35: Advertising; Business management; Business administration; Office functions; Updating of advertising material; Business inquiries; Business management and organization consultancy; Business management consultancy; Personnel management consultancy; Advisory services for business management; Procurement services for others [purchasing goods and services for other businesses]; Import-export agencies; Professional business consultancy; Accounting; Computerized file management; Publicity agencies; Auctioneering; Transcription; Relocation services for businesses; Business investigations; Compilation of statistics; Commercial information agencies; Commercial information and advice for consumers [consumer advice shop]; Television advertising; Photocopying services; Publication of publicity texts; Commercial or industrial management assistance; Business information; Commercial administration of the licensing of the goods and services of others; Layout services for advertising purposes; Payroll preparation; Marketing; Marketing research; Marketing studies; Opinion polling; Data search in computer files for others; Business research; Public relations; On-line advertising on a computer network; Organization of exhibitions for commercial or advertising purposes; Organization of fashion shows for promotional purposes; Business organization consultancy; Outsourcing services [business assistance]; Employment agencies; Personnel recruitment; Psychological testing for the selection of personnel; Bill-posting; Business management assistance; Presentation of goods on communication media, for retail purposes; Price comparison services; Production of advertising films; Radio advertising; News clipping services; Shop window dressing; Word processing; Secretarial services; Sponsorship search; Systemization of information into computer databases; Telephone answering for unavailable subscribers; Telemarketing services; Organization of trade fairs for commercial or advertising purposes; Dissemination of advertising matter; Writing of publicity texts; Sales promotion for others; Office machines and equipment rental; Arranging subscriptions to telecommunication services for others; Advertising by mail order; Distribution of samples; Direct mail advertising; Document reproduction; Administrative processing of purchase orders; Demonstration of goods; Publicity columns preparation; Business appraisals; Compilation of information into computer databases; Wholesaling, intermediate trading, mail order, catalogue mail order, online trading and retailing, including via the Internet and by means of teleshopping programmes, in the fields of: pharmacy articles, cosmetics and household goods, beauty preparations, toiletries, fuels and motor fuels, goods for the health sector, pharmaceutical articles, veterinary articles, sanitary preparations, medical articles, hand tools, optical goods, electric and electronic goods for household purposes, machines, tools and goods of common metal, construction articles, DIY articles and garden articles, hobby requisites and craft supplies, electrical goods and electronics goods, sound recording carriers and data media, computer equipment, computer peripheral devices, home entertainment products, installations for sanitary purposes, vehicles and vehicle accessories, fireworks, clocks and jewellery, musical instruments, printed matter, stationery, office requisites, bag makers' goods and saddlery, furnishings and decorative articles, furniture, carpets, tents, awnings, tarpaulins, clothing and clothing accessories, shoes and textile goods, toys, sporting goods, foodstuffs and beverages, agricultural products, horticultural products and forestry products, tobacco products and other luxury foods and alcohol; Administrative processing and organising of mail order for others; Administrative processing of orders as part of a mail order company; Issuing bonus cards (sales promotion); Display of goods for sales promotion; Business management consultancy in relation to strategy, marketing, production, staff and retail sales; Consultancy and information for consumers via customer services, product management and prices on Internet sites for online shopping; Providing and rental of advertising space on the internet; Procurement services for others [purchasing goods and services for other businesses]; Computer-aided data collection at cash registers for retailers; Electronic commerce, namely consumer consultancy via telecommunication networks for advertising and sales purposes; Business management relating to customer loyalty, incentive or promotional schemes; Planning of retail and external trade services with advertising spaces; Presentation of goods; Presentation of goods on communications media for retail purposes; Presentation of goods (for others), for sales purposes; Dissemination of advertising for others via an online communications network on the internet; Sales promotion; Sales promotion by awarding points for using credit cards; Commercial sales promotion; Sales promotion for services (for others) by arranging of advertising; Sales promotion for others provided through the distribution and the administration of privileged user cards; Rental of sales stands; Direct mail advertising; Mail order retail services for clothing accessories; Advertising by mail order; Demonstration of goods for advertising purposes; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Advertising, including sales promotion for goods and services, for others, by the transmission of advertising materials and the dissemination of advertising messages on computer networks; Presentation of goods; Presentation of goods (for others), for sales purposes; Presentation of goods on communication media, for retail purposes; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Administration of the business affairs of retail stores; Retailing of cosmetics in department stores, toiletries, machines for household purposes, hand tools, optical goods, electric and electronic household equipment; retail services relating to stationary; Retailing of clothing and clothing accessories; Retailing of furniture; Retailing of clothing; Retailing of carpets; Retail services of a stationer's outlet in relation to stationery, printed matter, computer equipment and computer peripheral devices, and home entertainment products; Retailing of groceries; Planning of retail and external trade services with advertising spaces; Presentation of goods on communications media for retail purposes; Business management consultancy in relation to strategy, marketing, production, staff and retail sales.

Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs; Credit card services; Debit card services; Issue of tokens of value; Issuance of credit cards; Issuing of travellers' checks [cheques]; Banking; Pawnbrokerage; Lending against security; Housing agents; Brokerage; Retirement payment services; Provident fund services; Debt collection agencies; Rent collection; Factoring; Financial consultancy; Financial sponsorship; Financing services; Apartment house management; Instalment loans; Home banking; Real estate agencies; Real estate management; Fund investments; Health insurance underwriting; Credit bureaux; Hire-purchase financing; Life insurance underwriting; Organization of collections; Charitable fund raising; Debt advisory services; Guarantees; Accident insurance underwriting; Loans [financing]; Rental of offices [real estate]; Renting of flats; Insurance brokerage; Financial management; Fiduciary; Leasing of real estate; Insurance consultancy; Insurance; Accommodation bureaux [apartments].

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Updating of computer software; Architectural consultation; Consultancy in the field of energy-saving; Information technology [IT] consulting services; Consultancy in the design and development of computer hardware; Web site design consultancy; Providing search engines for the internet; Computer software consultancy; Computer software design; Computer system design; Architecture; Design of interior decor; Dress designing; Packaging design; Computer virus protection services; Digitization of documents [scanning]; Chemical analysis; Computer programming; Monitoring of computer systems by remote access; Cosmetic research; Creating and maintaining web sites for others; Graphic arts design; Hosting computer sites [web sites]; Installation of computer software; Data conversion of computer programs and data [not physical conversion]; Conversion of data or documents from physical to electronic media; Duplication of computer programs; Server hosting; Software as a service [SaaS]; Styling [industrial design]; Maintenance of computer software; Recovery of computer data.

The contested goods and services are the following:

 

Class 6: Building and construction materials and elements of metal; pipes, tubes and hoses, and fittings therefor, including valves, of metal; nuts, bolts and fasteners, of metal; locks and keys, of metal; welding and soldering materials; Chill-moulds [foundry]; cables, wires and chains, of metal; metal hardware; doors, gates, windows and window coverings of metal; structures and transportable buildings of metal.

Class 19: Building and construction materials and elements, not of metal; doors, gates, windows and window coverings, not of metal; structures and transportable buildings, not of metal.

Class 36: Housing management; providing information relating to the rental of buildings.

Class 37: Building, construction and demolition; building maintenance and repair; cleaning of buildings.

Class 42: Science and technology services; engineering services; surveying and exploration services; architectural and urban planning services; natural science services; earth science services; testing, authentication and quality control; design services.

Class 43: Providing temporary accommodation; rental of temporary accommodation; Arranging temporary housing accommodations; Providing temporary housing accommodations; arranging and providing temporary accommodation; providing information about temporary accommodation via the internet; emergency shelter services [providing temporary housing]; providing information about temporary accommodation services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

 

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

In order to justify the dissimilarity between the goods and services in conflict, the applicant refers to the respective parties’ actual use of the signs in dispute and their different fields of business presenting various documents as proof. However, the examination of the likelihood of confusion which the Opposition Division is called on to carry out is a prospective examination and it is carried out in a more abstract manner. The comparison of the goods and services must be based solely on the wording of these goods and services. It is the ‘usual’ circumstances in which the goods and services covered by the marks are marketed (or may be distributed) that must be taken as a benchmark, that is, those for which it is usual to expect for the category of goods covered by the marks. The particular circumstances in which the goods and services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion. (judgments of 15/03/2007, C-171/06 P, Quantum, EU:C:2007:171; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58). Therefore, the Office can only consider the list of services for which the opponent’s trade mark is registered and which appears on the trade mark registration certificate, without entering into the parties’ actual business. This argument of the applicant cannot influence the findings reached in the comparison of the goods and services concerned and must be set aside.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

 Contested goods in Classes 6 and 19

 

The contested goods in these classes are various building and construction materials and elements of metal or not of metal.

The opponent´s services in Class 35 include, among others, retail and wholesale services in relation to various goods.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services, internet shopping, catalogue or mail order services in Class 35.

Bearing in mind the above, all the contested goods in Classes 6 and 19 are similar to a low degree to the opponent´s wholesaling, intermediate trading, mail order, catalogue mail order, online trading and retailing, including via the Internet and by means of teleshopping programmes, in the fields of: tools and goods of common metal, construction articles, DIY articles in Class 35 since the contested goods are either identical or at least similar to at least one of the category of goods subject to the retail services. The contested goods and the goods at retail are closely connected from the consumers’ perspective, because they belong to the same market sector, it is customary practice to market such goods together in the same places and are of interest to the same consumers.

Contested services in Class 36

The contested housing management; providing information relating to the rental of buildings are included in the broad category of the opponent´s real estate affairs. Therefore, they are identical.

Contested services in Class 37

The contested building, construction and demolition; building maintenance and repair; cleaning of buildings are similar to the opponent´s architecture in Class 42. These are complementary services that coincide in distribution channels, relevant public and providers.

Contested services in Class 42

The contested science and technological services; engineering services, surveying and exploration services, natural science services; earth science services are included in the opponent´s scientific and technological services and research and design relating thereto. Therefore, they are identical.

The contested architectural and urban planning services are included in the broad category of the opponent’s architecture. Therefore, they are identical.

The contested design services include as broader category the opponent´s design and development of computer hardware and software. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested authentication and quality control are broad categories of services that relate to the process of certifying that a certain product or service has passed performance or quality assurance tests and meets qualification criteria stipulated in contracts, regulations or specifications. These services are performed by consultants and specialists in the fields concerned in the context of different technical, industrial and scientific areas, as well as, in particular, in the IT field as part of the quality assurance process. As such, they are linked with the opponent’s design and development of computer software. The services may, for example, be part of the same process by which computer programs are created and checked before being brought to the market (e.g. custom software development and testing). They may be offered by the same specialists (as one-stop shops for IT solutions) and may target the same public through the same channels to satisfy the same or complementary needs. Therefore, these services are similar.

Contested services in Class 43

The contested services in this class are broadly speaking temporary accommodation services including information about them. These are services rendered to satisfy consumers’ needs for short- and middle-term accommodation, for example an accommodation bureau offering holiday homes for a week or for the entire summer. It is increasingly common for such undertakings to also offer services related to the management of properties in Class 36, including rental services for real estate such as houses, flats, etc., for permanent use. Furthermore, these services are marketed through the same channels of distribution, including physical agencies and dedicated websites online. Likewise, it is nowadays common for real estate agencies to offer properties such as houses or flats not only for sale or long term rental, but also for seasonal or short-term rental. Consequently, all the contested services in this class and the opponent´s real estate affairs; renting of flats in Class 36 can share at least the same providers, channels of distribution and target the same consumers. They are, therefore, similar to a low degree. (T-713/13,§33, T-213/09, §49-50).

 

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

 

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and at business consumers with specific professional knowledge or expertise.

 

The degree of attention is considered to vary from average to higher than average depending on the specialised nature, price and frequency of purchase of the goods and services in question.

  

For instance, the opponent´s real estate affairs target also the general public, which is reasonably well informed and reasonably observant and circumspect. However, the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010-2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

 

c) The signs and distinctiveness of the earlier mark

 

dm
Earlier trade mark	Contested sign

 

 

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57).  Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

Although the verbal element of the contested sign is one word, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Considering its depiction in two different shades of blue, the German-speaking part of the public will dissect this element into the words ‘DM’ and ‘BAU’.

The word ‘BAU’ of the contested sign will be understood by that part of the public as ‘building’, or ‘construction’ (Information translated from Duden online dictionary on 20/07/2021 at https://www.duden.de/rechtschreibung/Bau ). This element is non-distinctive for all the contested goods that are various building and construction materials and elements and for the services in Class 37 that are related building and construction services. It is weak for the services in Classes 36, 42 and 43 since it alludes to their nature (ex. science and technology services, engineering services in relation to construction and/or building).

The element ‘DM’ constituting the earlier mark and the first part of the contested sign is not descriptive or allusive to any of the characteristics of the goods and services in question and is therefore, distinctive for this public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public such as consumers in Germany and Austria.

Since the earlier trade mark has no meaning for any of the goods in question from the perspective of the public in the relevant territory – and given the lack of a claim for enhanced distinctiveness on the side of the opponent – the distinctiveness of the earlier mark must be seen as normal.

The figurative device of the contested sign is distinctive for the goods and services in question.

The contested sign has no dominant elements. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

 

 Visually, the signs coincide in the letters ‘DM’ constituting the earlier mark. The signs differ in the element ‘BAU’ of the contested sign and its figurative device, both with no counterparts in the earlier mark. Further, the signs differ visually in the blue colour and font of the contested sign which is standard. In this regard it has to be noted that as consumers are accustomed to the stylisation of verbal elements in marks, they will perceive the stylisation of the contested sign as merely a decorative depiction of the word element. Therefore, the public will pay less attention to these features as indicators of commercial origin.

 

Considering the distinctives and impact of each of the elements addressed above, the signs are visually similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the distinctive element ‛DM’, present identically in both signs.  The pronunciation differs in the sound of the element ’BAU’, found to be at best weak for part of the services, whereas for all goods it is non-distinctive. Therefore, the signs are aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘BAU’ in the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

 

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) Global assessment, other arguments and conclusion

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods and services are partly identical, partly similar to varying degrees. They are directed at the public at large and professionals whose degree of attention during purchase will vary from average to higher than average.

The earlier mark is of a normal distinctiveness.

As explained above, the signs are visually similar to an average degree, aurally to a high degree, while conceptually they are not similar. However, the fact that the signs are conceptually not similar should not be overemphasised since it arises from the meaning of the element ‘BAU’ which is at best weak and which does not have too much weight in the contested sign. In fact, the earlier mark is entirely presented in the contested sign as an identifiable element there. This is as result of the meaningful element ‘BAU’ and the particularities in the graphical representation of the verbal element in the contested sign, namely its depiction in two different shades of blue which additionally prompts the dissection. The figurative device and stylisation of the contested sign are of less impact for consumers and cannot outweigh the similarities produced by the common and distinctive element ‘DM’.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

In its observation the applicant argues that the contested application has a reputation and filed various items of evidence to substantiate this claim. The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Further the applicant argues that it owns an earlier registration for the word mark ‘DMBAU’ that has not been opposed by the opponent. However, the Office is in principle restricted in its examination to the trade marks in conflict. Therefore, this applicant´s argument must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 654 456. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

Bearing in mind the interdependence principle mentioned above, it follows that the contested trade mark must be rejected for all the goods and services, including the ones found to be similar to a low degree only.

 

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Francesca DRAGOSTIN

Meglena BENOVA

Cynthia DEN DEKKER

 

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.